DCT

1:23-cv-05040

GS Holistic LLC v. Partnerships Unincorp Associations

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
    • Plaintiff: GS Holistic, LLC (Delaware)
    • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule “A,” (Jurisdiction(s) unknown, alleged to be primarily People's Republic of China or other foreign jurisdictions)
    • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
  • Case Identification: 1:23-cv-05040, N.D. Ill., 08/01/2023
  • Venue Allegations: Venue is asserted on the basis that Defendants operate interactive e-commerce stores that directly target and make sales to consumers in the United States, including Illinois.
  • Core Dispute: Plaintiff alleges that numerous unidentified e-commerce operators are selling hookahs that infringe the ornamental designs protected by two of its U.S. design patents.
  • Technical Context: The technology at issue is the ornamental design for gravity-infuser style hookahs, a consumer product category where distinctive appearance contributes to brand recognition.
  • Key Procedural History: The complaint is structured as a "Schedule A" action, a procedural mechanism often used to sue a large number of anonymous or pseudonymous online sellers, who are alleged to be part of an interrelated infringement network operating from foreign jurisdictions. The complaint does not mention any prior litigation or administrative proceedings involving the patents-in-suit.

Case Timeline

Date Event
2020-09-02 Priority Date for D'817 and D'804 Patents
2022-02-15 U.S. Patent No. D943,817 Issues
2022-11-22 U.S. Patent No. D970,804 Issues
2023-08-01 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D943,817 - "Hookah" (Issued February 15, 2022)

The Invention Explained

  • Problem Addressed: Design patents protect ornamental appearance rather than functional solutions. The filing addresses the creation of a new, original, and ornamental design for a hookah, with the complaint asserting that such distinctive designs have become "instantly recognizable" to consumers (Compl. ¶5, ¶7).
  • The Patented Solution: The patent claims the specific ornamental design for a hookah as depicted in its figures (D’943,817 Patent, Figs. 1-8). The core of the design consists of two vertically-aligned, capsule-shaped transparent globes that are connected by a central collar assembly. The broken lines shown in the patent figures indicate parts of the hookah, such as its base and certain functional nozzles, that are not part of the claimed design (D'943,817 Patent, DESCRIPTION).
  • Technical Importance: The commercial importance of the design is alleged to stem from its distinctiveness, which Plaintiff claims consumers associate with the quality and innovation of its "GS Products" brand (Compl. ¶7).

Key Claims at a Glance

  • The patent contains a single claim for "The ornamental design for a hookah, as shown and described" (D'943,817 Patent, CLAIM).
  • In design patent litigation, there are no textual claim elements to construe. Infringement is determined by the "ordinary observer" test, which assesses whether an ordinary observer would find the overall visual appearance of the accused product to be substantially the same as the claimed design.

U.S. Design Patent No. D970,804 - "Hookah" (Issued November 22, 2022)

The Invention Explained

  • Problem Addressed: As with the D’817 Patent, this patent protects a novel ornamental design for a hookah to distinguish it in the marketplace (Compl. ¶7).
  • The Patented Solution: The ’804 Patent, which is a divisional of the application that led to the ’817 Patent, claims a related but distinct ornamental design (D'970,804 Patent, Related U.S. Application Data). The design, shown in the patent's figures, appears to feature a similar central globe-and-collar mechanism but depicts a different configuration for the stand and mouthpiece elements (D'970,804 Patent, Figs. 1-8). As in the parent patent, broken lines disclaim portions of the hookah from the scope of the claimed design (D'970,804 Patent, DESCRIPTION).
  • Technical Importance: The complaint groups this design with the ’817 patent design under the collective term "GS Designs," alleging both are broadly recognized by consumers (Compl. ¶7).

Key Claims at a Glance

  • The patent asserts a single claim for "The ornamental design for a hookah, as shown and described" (’804 Patent, CLAIM).
  • Infringement analysis will likewise proceed under the "ordinary observer" test, comparing the overall visual impression of the accused products with the design shown in the patent's figures.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are hookahs, referred to as the "Infringing Products," which are allegedly sold by the Defendants identified on Schedule A (Compl. ¶3). The complaint states that images of these products are shown in an "Exhibit 1," which was not included in the provided court filing (Compl. ¶3).

Functionality and Market Context

The complaint does not describe the specific technical operation of the accused hookahs. Instead, it focuses on their alleged commercial context, stating they are "unauthorized and unlicensed products" sold through a network of interactive e-commerce stores operating under various "Seller Aliases" (Compl. ¶2, ¶3). The complaint alleges these storefronts are designed to appear as authorized retailers to consumers in the U.S. and Illinois and accept payment through common U.S.-based systems (Compl. ¶13, ¶14). The complaint includes an image from the D'817 patent, showing a top perspective of the hookah design with its distinctive vertically-aligned globes. (Compl. p. 4).

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart or a side-by-side comparison of the patented designs and the accused products. It asserts infringement through narrative allegations, stating that Defendants make, use, sell, or import "Infringing Products that infringe directly and/or indirectly the ornamental design claimed in the GS Designs" (Compl. ¶24).

The core of the infringement case will depend on a visual comparison. The complaint provides the figures from the patents-in-suit as the basis for this comparison. For instance, the complaint reproduces a perspective view of the D'970,804 patent design, highlighting the claimed central assembly and its relationship to the disclaimed stand and mouthpiece elements. (Compl. p. 7).

  • Identified Points of Contention:
    • Visual Similarity: The central question for the court will be whether an "ordinary observer," familiar with the prior art for hookahs, would be deceived into purchasing an accused product believing it to be the Plaintiff's patented design. The court's analysis will focus on the overall ornamental appearance of the designs, not on minor differences.
    • Scope of the Claimed Design: A potential issue is the scope of the claimed design in light of the disclaimed portions shown in broken lines in the patent figures (D'817 Patent, DESCRIPTION; D'804 Patent, DESCRIPTION). The analysis will focus on whether the accused products copy the overall visual impression created by the claimed solid-line features, even if the unclaimed portions (like the base or specific nozzles) differ.
    • Impact of Prior Art: The scope of a design patent claim is viewed in the context of the prior art. If the field is crowded with similar-looking hookahs, the patents-in-suit may be construed more narrowly, and smaller differences between the patented designs and the accused products could be sufficient to find non-infringement. The complaint does not discuss any prior art.

V. Key Claim Terms for Construction

Claim construction is not typically a central issue in design patent litigation, as the claim is defined by the drawings rather than by textual limitations. The dispute will likely focus on the application of the "ordinary observer" test to the overall visual appearance of the products rather than the definition of any specific term.

VI. Other Allegations

  • Indirect Infringement: The complaint makes a general allegation of indirect infringement (Compl. ¶24) and requests an injunction against anyone "aiding, abetting, [or] contributing to" infringement (Compl. p. 17, Prayer ¶1(b)). The factual support for this claim is not distinctly articulated from the allegations of direct infringement by the seller Defendants.
  • Willful Infringement: Willfulness is explicitly alleged (Compl. ¶21). The complaint supports this by claiming Defendants work in "active concert to knowingly and willfully manufacture, import, distribute, offer for sale, and sell Infringing Products" and participate in online communities to discuss tactics for evading detection and litigation (Compl. ¶18, ¶20).

VII. Analyst’s Conclusion: Key Questions for the Case

  1. Visual Infringement: The dispositive issue will be a visual one: Is the overall ornamental appearance of the Defendants' accused hookahs substantially the same as the claimed designs in the D'817 and D'804 patents from the perspective of an ordinary observer? The outcome will depend on a side-by-side comparison that is not yet available in the pleadings.
  2. Enforcement and Identification: A critical procedural question is whether the Plaintiff can successfully use the "Schedule A" complaint to identify the true operators behind the online seller aliases and enforce a potential judgment. The complaint's allegations regarding Defendants' use of fictitious identities and operations in foreign jurisdictions suggest that discovery and enforcement will be a central challenge in the litigation (Compl. ¶9, ¶16, ¶19).